Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claim 1, in the reply filed on 6/26/26 is acknowledged.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/694,009 in view of Egami et al (US20200392385).
This is a provisional nonstatutory double patenting rejection.
‘009, claim 1, claims a surface-treated silica particle dispersion sol formed by dispersing a group of colloidal silica particles in a hydrophobic solvent, the colloidal silica particles being composed of an average number of 4 to 300 spherical primary particles, as observed with a field emission-type scanning electron microscope, chainly connected to have an average length of 35 nm to 1,800 nm, and the surfaces of the particles being coated with a silane coupling agent having a functional group which is a vinyl group, a methyl group, an epoxy group, a styryl group, or a methacrylic group, or coated with a titanate-based coupling agent or an aluminate-based coupling agent, wherein an average particle diameter of the spherical primary particles is 6 nm to 20 nm, an average aspect ratio of the spherical primary particles is in a range of 1.0 to 1.3, a content ratio of each of impurities of K, Na, or NH3 per the colloidal silica particle is 3,500 ppm by mass or less, and a content ratio of each of impurities of an alkaline earth metal or aluminum is less than 1 ppm by mass.
Although this reference teaches a hydrophobic solvent, this reference does not teach a specific hydrophobic solvent.
Egami, paragraph 35 of the PGPUB, teaches alcohols such as methanol, ethanol, propanol, and butanol
Egami, paragraph 43 of the PGPUB, teaches it is noted that in this step, the organic solvent in the solvent of the silica particle dispersion can be replaced with water (pure water) simultaneously with the removal of ammonia.
Egami, paragraph 52 of the PGPUB, teaches incidentally, water, ammonia, or the like may be added to the chain particle dispersion as necessary, as long as it is after the hydrothermal treatment.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains that the hydrophobic solvent can be ethanol, propanol or butanol as these solvent are commonly used in a chainlike silica dispersion.
Further, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains to incorporate water into the dispersion to adjust the dispersion to a specific concentration.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Egami et al (US20200392385) in view of Yoshitake et al (20170001870).
Egami teaches a chain silica particle dispersion.
Egami, paragraph 19 of the PGPUB, teaches the dispersion according to the present invention includes chain particles having an average linked number of silica particles (primary particles) of 7 or more.
Egami, paragraph 22 of the PGPUB, teaches for optional 100 particles, the linked number (the number of linked primary particles) was checked through a scanning electron microscope. An average value thereof was defined as an average linked number.
Egami, paragraph 33 of the PGPUB, teaches the silica particles (primary particles) obtained in this step preferably have an average particle size of 5 to 300 nm.
Egami, paragraph 34 of the PGPUB, teaches such silica particles preferably have a truly spherical shape with an aspect ratio of 1.00 to 1.20, and the coefficient of variance (CV value) of particles is preferably 30% or less.
Egami, paragraph 35 of the PGPUB, teaches examples of the organic solvent may include alcohols, ketones, ethers, and esters. More specific examples may include alcohols such as methanol, ethanol, propanol, and butanol, ketones such as methyl ethyl ketone and methyl isobutyl ketone, glycol ethers such as methyl Cellosolve, ethyl Cellosolve, and propylene glycol monopropyl ether, glycols such as ethylene glycol, propylene glycol, and hexylene glycol, and esters such as methyl acetate, ethyl acetate, methyl lactate, and ethyl lactate.
Egami, paragraph 52 of the PGPUB, teaches incidentally, water, ammonia, or the like may be added to the chain particle dispersion as necessary, as long as it is after the hydrothermal treatment.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains to incorporate water into the dispersion to adjust the dispersion to a specific concentration.
Egami, paragraph 58 of the PGPUB, teaches the amount of ammonia relative to silica was 0.05% by mass (ammonia concentration in the dispersion including the inside of particles: 100 ppm).
Although Egami teaches the ammonium concentration is less than 100 ppm, Egami does not teach the concentration of K, Na, alkali earth metal or aluminum.
Yoshitake teaches silica particles.
Yoshitake, paragraph 33 of the PGPUB, teaches according to the present embodiment, contamination with the aforementioned metallic impurities can be avoided, and an additional process of removing such impurities can be eliminated.
Yoshitake, paragraph 34 of the PGPUB, teaches the method of the embodiment employing an alkoxysilane serving as a raw material contains substantially no metallic species which may possibly serve as a metallic impurity, which has ever been employed in conventional methods employing water glass as a raw material. Examples of the metallic species include sodium, iron, and aluminum. The metallic species is typically an alkali metal element such as sodium. Notably, the expression “substantially containing” means 5 ppm or less with respect to the solid content of silica.
Yoshitake, example 1, teaches the silica particles were found to have a sodium content of 1 ppm.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains to provide a raw material containing 5ppm or less of metallic species as taught by Yoshitake as the raw material as taught by Egami to ensure a high purity silica product.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20170252761, paragraph 49 of the PGPUB, teaches SNOWTEX-PS-S and SNOWTEX-PS-M have a chain of beads morphology. The SNOWTEX-PS-M particles are about 18 to 25 nanometers in diameter and have lengths of 80 to 150 nanometers.
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/STEFANIE J COHEN/Examiner, Art Unit 1732 8/14/26
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